But challenges at the PTAB presuppose that the patent has issued though, and the first challenge many applications will face will be heighted patent eligibility hurdles just to escape the Patent Office. Of course, under the Supreme Court’s Alice/Mayo framework it is possible for computer implemented inventions to be found not to be abstract, although it seems more likely that such inventions will survive 101 scrutiny, if at all, because there is something significantly more added to the claims. Of course, that something significantly more requires a thorough and highly detailed technical description of the invention and the various aspects of the invention, which is realistically the only way to survive the search for the inventive concept under Alice/Mayo Step 2B. See Defining Computer Implemented Inventions post-Alice.
It is now more true than ever that patent drafters must treat every invention as the million dollar, or billion dollar, invention from the very start. The reason for this is simple: By the time you realize the invention will be a huge commercial success and the patent application warrants that level of attention it will be too late to do anything unless a proper foundation of a solid patent application has already been laid from the earliest stages. This means an extraordinarily detailed specification, it means thoughtful application of as much known prior art as possible, and it means checking and cross-checking to make sure that initial filing is as complete and error-free as possible.
Join me for a free webinar discussion – Optimizing Patent Applications: Drafting to Withstand Challenge – on April 19, 2017, at 2pm ET. Joining me will be Joseph Root, author of Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. In addition to taking as many questions as possible from the audience we will discuss:
- Best practices writing to overcome Alice-based 101 rejections.
- Identifying the invention/improvement versus KSR 103 concerns.
- Best practices for ensuring a complete and thorough specification.
- Nautilus, means-plus-function and other 112 matters.